Ex Parte Chiappetta et al

Board of Patent Appeals and Interferences

Jan 9, 2012

10431723 (B.P.A.I. Jan. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
__________________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
_______________________ 6
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Ex parte JEREMY A. CHIAPPETTA, JONATHAN M. COHN, 8
ELLEN R. DULBERGER, and 9
MARCELO C. MAGALHAES 10
_________________ 11
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Appeal 2010-008007 13
Application 10/431,723 14
Technology Center 3600 15
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Before HUBERT C. LORIN, ANTON W. FETTING, and 19
BIBHU R. MOHANTY, Administrative Patent Judges. 20
21
FETTING, Administrative Patent Judge. 22

DECISION ON APPEAL
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Appeal No. 2009-009822
Application No. 11/467,823

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STATEMENT OF THE CASE1 1
Jeremy A. Chiappetta, Jonathan M. Cohn, Ellen R. Dulberger, and 2
Marcelo C. Magalhaes (Appellants) seek review under 35 U.S.C. § 134 3
(2002) of a final rejection of claims 1-18, the only claims pending in the 4
application on appeal. We have jurisdiction over the appeal pursuant to 5
35 U.S.C. § 6(b) (2002). 6
The Appellants invented a way of delivery of services for transformation 7
of a client's legacy applications (Specification 1:4-7). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. A computer implemented method of transforming legacy 12
business information technology services for a client, 13
comprising the steps of: 14
[1] predefining 15
by an information technology services company 16
for a client company, 17
components 18
for use by said client company having information 19
technology service elements consisting of 20
code cleansing, 21
code conversion, 22
data migration, 23
enterprise application integration portals, 24
componentization and web services, and 25
workflow, 26
and also 27
[2] predefining corresponding questions, 28
based on market research 29

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed January 12, 2010) and the Examiner’s Answer (“Ans.,” mailed
February 23, 2010).
Appeal No. 2009-009822
Application No. 11/467,823

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performed by said services company; 1
[3] receiving from said client company 2
parameters for said service elements 3
as responses to said questions; 4
[4] entering 5
said service elements and 6
said parameters 7
in a computer spreadsheet 8
for selecting and pricing service elements 9
for said client company 10
by determining business value 11
of said service elements 12
from said parameters; 13
and 14
[5] delivering the selected service elements 15
to said client company. 16
17
The Examiner relies upon the following prior art: 18
Galich US 6,535,591 B1 Mar. 18, 2003
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable 19
over Galich and Official Notice. 20
ISSUES 21
The issues of obviousness turn primarily on whether patentable weight is 22
to be afforded the nature of the data collected in the claims, and if so, 23
whether the types of data in the claims were predictable in view of Galich. 24
FACTS PERTINENT TO THE ISSUES 25
The following enumerated Findings of Fact (FF) are believed to be 26
supported by a preponderance of the evidence. 27
Appeal No. 2009-009822
Application No. 11/467,823

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Appellants’ Admissions 1
1. The Examiner’s "Official Notice" taken that both the concept 2
and advantage of code cleansing, code conversion, data migration, 3
enterprise application integration, portals, componentization and web 4
services, and workflow are well known in the art. Appeal Br. 5. 5
2. The Appellants do not dispute the Examiner’s official notice of 6
the predictability of using a spreadsheet to convey data. 7
Facts Related to the Prior Art 8
Galich 9
3. Galich is directed to providing telecommunication service 10
pricing to a corporate client over a computer network. This is done 11
by: querying the client to choose a client profile from a profile group; 12
using the client profile to choose a telecommunications service 13
questionnaire; presenting the questionnaire to the client over the 14
network; obtaining a response to the questionnaire from the client 15
over the network; using the response to determine 16
telecommunications service pricing; and providing the 17
telecommunications service pricing over the data network to the 18
client. Galich 2:13-23. 19
4. Galich’s client profile group comprises manufacturing, 20
professional services, and retail services. Clients in any one of these 21
profiles tend to have characteristics upon which telecommunications 22
service pricing can be established that are common to that profile. 23
That is, once a client profile is established, particular questions for 24
the client can be asked through a tailored questionnaire to determine 25
information on which to base service pricing. The questionnaire may 26
Appeal No. 2009-009822
Application No. 11/467,823

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be tailored to a greater degree depending on the particular service to 1
be provided. Galich 2:24-34. 2
5. A client profile group may be for Retail, Professional Services, 3
and Manufacturing, Government, Utilities, Telecommunications, 4
Internet Service Providers, and others. These groups may be further 5
subdivided, as for example, the Professional Services profile may be 6
further broken down into Law, Accounting, Insurance, and Banking. 7
Manufacturing could likewise be subdivided into large capital 8
equipment, consumer items, automotive, textiles, chemicals, or 9
additional similar categories. Further, all categories could be 10
subdivided in terms of total annual sales volume. It has been 11
discovered that determining a client profile in this manner makes the 12
process of providing telecommunication service pricing much more 13
efficient. Clients within a group have been found to have similar 14
requirements, to have similar existing communications infra-15
structures, and to have similar general phone usage patterns. As an 16
example, it has been discovered that clients within the manufacturing 17
group tend to have robust intra-company data networks, and have a 18
high proportion of their overall phone traffic comprising intra-19
company phone calls. Clients in the retail group, on the other hand, 20
have been discovered to have much less capable and only limited 21
intra-company data networks, and have intra-company phone traffic 22
that comprises a much smaller proportion of their total phone usage. 23
Galich 3:56 – 4:16. 24
6. Using the client specified client profile, a questionnaire is 25
selected from a questionnaire database based on the client profile 26
Appeal No. 2009-009822
Application No. 11/467,823

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selected. The client selects an appropriate icon on a web page 1
corresponding to their client profile, clicks on the icon, and is linked 2
to an additional web page that contains that client profile 3
questionnaire. Depending on that profile, the questionnaire will 4
present questions designed to obtain the required information from a 5
client fitting that particular profile. The questionnaire is then 6
transmitted to the client. The client response and a phone bill are 7
thus collected. Galich 4:17-37. 8
7. The analysis and questionnaire contents may depend on market 9
conditions. Galich 6:62 – 7:18. 10
ANALYSIS 11
We are unpersuaded by the Appellants’ arguments that “[n]either Galich 12
nor ‘Official Notice’ when taken separately or together describe or suggest 13
that there are predefined components with the components having service 14
elements as required by claims 1, 8, and 15” and that “although Galich 15
describes tailoring a questionnaire based on a client profile, he does not 16
describe or suggest Appellants' claims 1 and 8 requirement of predefining 17
corresponding questions (corresponding to the components) based on market 18
research performed by the services company.” Appeal Br. 5-6. Although 19
the Appellants also argue the lack of parameters as responses to questions at 20
Appeal Brief 7, this argument is simply an implication of and entirely 21
premised on the second argument concerning questions. 22
We find that Galich is directed to providing telecommunication service 23
pricing (FF 0), which is a pricing for transforming business information 24
technology services for a client. Galich does so by predefining certain 25
telecommunication components and questions based on research of different 26
Appeal No. 2009-009822
Application No. 11/467,823

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markets such as retail, professional services, manufacturing, or government. 1
Galich uses the responses received from those questions and the original 2
parameters by entering them in an analysis whose results are delivered to the 3
customer. FF 0 - 0. 4
Thus, since there is no issue regarding the use of a spreadsheet as in 5
limitation [4], the issue is whether it was predictable to perform a similar 6
data query and collation for migrating legacy management information 7
systems. If so, then all of the services listed in limitation [1], acknowledged 8
as being well known and used, would be predictable in being among those 9
employed in such migration. Code cleansing and conversion are simply the 10
terms of art for updating the lines of computer code known to be required. 11
Data migration is the requisite transfer of the underlying data itself. 12
Enterprise application integration portals and componentization and web 13
portals are merely the terms for tools generally used in the user interfaces for 14
network communication that have been considered requisite in any modern 15
enterprise. Workflow is just the term for the processes employed on the 16
data. So the issue really devolves down to whether it was predictable to 17
employ Galich’s data acquisition techniques for legacy system migration. 18
We find that Galich is merely employing predictable techniques in the 19
eyes of any professional of ordinary skill in the computer arts involved in 20
planning a project to update some substantial information service. The use 21
of predefined parameters based on already known similarities among similar 22
entities is a notorious technique, also employed by Galich, to avoid 23
reinventing the wheel. The use of a questionnaire to elicit information more 24
likely to be unique to a specific client is similarly a notorious technique, also 25
employed by Galich. 26
Appeal No. 2009-009822
Application No. 11/467,823

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In any event, the independent claims do no more than elicit information 1
and enter it into a spreadsheet. The contents of the information and the non-2
functional techniques employed in its acquisition are given no patentable 3
weight for such information is non-functional descriptive material. See In re 4
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). 5
6
CONCLUSIONS OF LAW 7
The rejection of claims 1-18 under 35 U.S.C. § 103(a) as unpatentable 8
over Galich and Official Notice is proper. 9
10
DECISION 11
The rejection of claims 1-18 is affirmed. 12
No time period for taking any subsequent action in connection with this 13
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 14
§ 1.136(a)(1)(iv) (2007). 15
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AFFIRMED 17
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Klh 23